Intellectual Property - Trade Mark Infringement - Advertisement

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In Wolters Kluwer Ltd v Reed Elsevier Ltd (2005), the claimant published internet seminar services for accountants below a service known as CCH Seminars On-line. The material for the service was provided by Via the internet Tutors till July 2005, when this relationship was terminated. Web based Tutors was engaged by the defendant to give material for a competing service referred to as Tolley's Seminars Online.

In the 21 July 2005 edition of the magazine referred to as Taxation, the defendant advertised its internet tax and accountancy seminars and declared that it was the identical service as that of the claimant's. The defendant also advertised that they would provide subscribers of CCH Seminars use of Tolley's Seminars Via the internet no cost of charge till expiry of the CCH Seminars subscription.

The claimant objected to these advertisements and sought a correction notice. The defendant issued a notice making it clear that CCH was continuing with its own service. The claimant was unsatisfied with this notice and objected requesting a further correction notice on the grounds that the notice still sought to rely on the claimants name and reputation to attempt to divert buyers to the defendant's competing service.

The claimant hence issued a claim for trade mark infringement and applied for an injunction to restrain infringement of a registered trade mark contrary to s.10 of the Trade Marks Act 1994.

The claimant argued that the defendant's use of the claimant's mark:

▪ was dishonest

▪ took unfair benefit of the claimant's mark and

▪ was detrimental to the distinctive character or repute of their trade mark.

The defendant did not accept the above allegations and contended that the use of the mark fell inside s.10 (6) of the Trade Mark Act 1994, whereby it is permissible to use a trade mark for the identification goods and/or services.

The court held that:

▪ the use of the claimant's trade mark in the defendant's advertisement fell inside s.10(6) due to the fact the mark was identifying the service provided by the defendant and

▪ the advertisement was not dishonest but rather a form of comparative advertising.

The application was hence dismissed.

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© RT COOPERS, 2005. This Briefing Note does not give a comprehensive or total statement of the law relating to the troubles discussed nor does it constitute legal advice. It is intended only to highlight common difficulties. Specialist legal suggestions should really normally be sought in relation to specific circumstances.